GDS Link, LLC

Patent Trials and Appeals Board

Mar 17, 2022

2021003202 (P.T.A.B. Mar. 17, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/953,029 04/13/2018 Florian Lyonnet 1427-1001US 8989 28240 7590 03/17/2022 THE DANAMRAJ LAW GROUP, P.C. TURLEY LAW CENTER, SUITE 810 6440 N. CENTRAL EXPRESSWAY DALLAS, TX 75206 EXAMINER DUCK, BRANDON M ART UNIT PAPER NUMBER 3698 NOTIFICATION DATE DELIVERY MODE 03/17/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): betty@danamraj.com dlg-admin@danamraj.com shreen@danamraj.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FLORIAN LYONNET and ESTELA ALVAREZ NAVAS ____________ Appeal 2021-003202 Application 15/953,029 Technology Center 3600 ____________ Before BRADLEY B. BAYAT, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s final decision to reject claims 1-18, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). The Appellant identifies the real party in interest as “GDS LINK LLC.” Appeal Br. 1. Appeal 2021-003202 Application 15/953,029 2 CLAIMED SUBJECT MATTER The Appellant’s invention “generally relates to artificial intelligence and machine learning,” more particularly “is directed to effectuating a decision-making system and method based on supervised learning,” and specifically is directed to “facilitating efficient decision-making with respect to a subject entity requiring an evaluation or assessment relative to a suitable performance variable.” Spec. ¶¶ 1, 7. Claims 1, 7, and 13 are the independent claims on appeal. Claim 1 (Appeal Br. 21 (Claims App.)) is exemplary of the subject matter on appeal and is reproduced below (with lettered bracketing added for reference). 1. A computer-implemented method for facilitating efficient decision-making with respect to a subject entity, the method comprising: [(a)] obtaining a labeled training dataset containing N records corresponding to N entities respectively, each record comprising a value relating to a performance variable and a plurality of values corresponding to a set of attribute variables, wherein the performance variable and the attribute variables relate to a credit decision making process; [(b)] generating a trained decision engine responsive to performing supervised learning over at least a portion of the labeled training dataset; [(c)] receiving a plurality of attribute values for the subject entity requiring a decision relative to an estimate of the performance variable based on the attribute values of the subject entity; and [(d)] applying the trained decision engine to the plurality of attribute values to determine a decision score as a function obtained as a set of linearly decomposed constituent components corresponding to the attribute values of the subject entity, thereby effectuating an objective determination of which attributes Appeal 2021-003202 Application 15/953,029 3 contribute to what portions of the decision score in a computationally efficient manner. THE REJECTION Claims 1-18 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. OPINION The Appellant argues the pending claims as a group. See Appeal Br. 13, 19. We select independent claim 1 as representative of the group, with the remaining claims standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019). 35 U.S.C. § 101 Framework Section 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 Appeal 2021-003202 Application 15/953,029 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citations omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). Appeal 2021-003202 Application 15/953,029 5 If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. USPTO Section 101 Guidance We are also guided by U.S. Patent and Trademark Office (“USPTO”) Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update”), incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104-06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51. Although “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance,” the guidance “does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO.” Id. The Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id. at 50. Appeal 2021-003202 Application 15/953,029 6 Under USPTO guidance, we first look to whether the claim recites: (1) any judicial exceptions, including laws of nature, natural phenomena, and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b)) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2), 2106.04(d)) (“Step 2A, Prong Two”).2 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the additional elements, individually or in combination, provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An inventive concept ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)). Among the considerations in determining whether the additional elements, individually or in combination, amount to significantly more than the exception itself, we look to whether they add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56. 2 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54-55; MPEP § 2106.04(d). Appeal 2021-003202 Application 15/953,029 7 Step One of the Mayo/Alice Framework Under the first step of the Mayo/Alice framework and Step 2A, Prong One of USPTO guidance, the Examiner determines that claim 1 “describes a process for obtaining a record data set with different values for a subject using a decision method for the data set placing values on the subject that need decisions, and applying a decision method to the values for each subject” with limitations that “are processes that, under its broadest reasonable interpretation, cover[] performance of the limitations in the mind or via manual human activity, but for the recitation of generic computer components” and are “mental processes or organizing human activities.” Final Act. 3; see also Ans. 3-4. Under Prong Two of USPTO guidance, the Examiner determines that the additional limitation of a generic processor “is no more than mere instructions to apply the exception using generic computer component” that “does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.” Final Act. 3; see also Ans. 4-5. The Appellant disagrees and contends that, under Prong One, the process is not a mental process and the Examiner’s characterization “is inappropriately abstract and overbroad.” Appeal Br. 13-16; see also Reply Br. 2-4. Under Prong Two, the Appellant contends that claim 1 “as a whole integrates the alleged idea into a practical application thereof” because “when taken as a whole, [claim 1] is directed to a concrete and tangible implementation of a method and apparatus for facilitating objective determination of a credit decision score for a subject entity” and “provides specific improvements over the existing technology of credit scoring by facilitating objective determination of scores as well as their constituent Appeal 2021-003202 Application 15/953,029 8 components by conveniently identifying the attributes of subject entities that contribute the most.” Appeal Br. 16-18; see also Reply Br. 5-8. Under the first step of the Mayo/Alice framework and Step 2A of USPTO guidance, we first determine to what the claims are directed, i.e., whether the claims recite an abstract idea and if so, whether the claims are directed to that abstract idea. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims are on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear from the Specification, including the claim language, that claim 1 focuses on an abstract idea, and not on any improvement to technology and/or a technical field. The Specification provides evidence as to what the claimed invention is directed. Here, the Specification is entitled “DECISION-MAKING SYSTEM AND METHOD BASED ON SUPERVISED LEARNING.” Spec. Title. In the “FIELD OF THE DISCLOSURE” section, the Specification provides that the “disclosure generally relates to artificial intelligence,” and “[m]ore particularly, and not by way of any limitation, the present disclosure is directed to effectuating a decision-making system and method based on supervised learning and machine learning.” Id. ¶ 1. In the “BACKGROUND” section, the Specification discusses that credit scores are Appeal 2021-003202 Application 15/953,029 9 numerical representations of credit worthiness based on analysis of credit files and are used by lenders and other organizations to evaluate potential risks of lending money, to mitigate losses, to determine creditworthiness, to determine who qualifies for loans as well as their interest rates and credit limits, and to determine which customers are likely to bring in the most revenue. Id. ¶¶ 2, 3. The Specification also describes prior art weaknesses in credit scoring including “as an ordinal ranking, some scores only provide a borrower’s riskiness from highest to lowest” and “its inability to explicitly factor in specific attributes of a subject borrower’s profile.” Id. ¶ 4. Use of existing statistical models and machine learning algorithms to build those models “has so far been hindered by the fact that generating suitable reports that comply with applicable laws and regulations is a complex task.” Id. ¶ 5. The invention ostensibly provides for further improvement in the “several advances [that] have been made in credit scoring and reporting” by “facilitating efficient decision-making with respect to a subject entity requiring an evaluation or assessment relative to a suitable performance variable, e.g., credit worthiness, risk of default, etc.”, thus “provid[ing] superior credit decisioning techniques that are computationally more effective compared to existing statistical modelling approaches.” Id. ¶¶ 6, 7, 70. Consistent with this disclosure, claim 1 recites “[a] computer- implemented method for facilitating efficient decision-making with respect to a subject entity, the method comprising” the steps of: (a) obtaining data records comprising values related to the credit decision making process, i.e., “obtaining a labeled training dataset containing N records corresponding to N entities respectively, each record comprising a value relating to a Appeal 2021-003202 Application 15/953,029 10 performance variable and a plurality of values corresponding to a set of attribute variables, wherein the performance variable and the attribute variables relate to a credit decision making process;” (b) generating a decision engine, i.e., “generating a trained decision engine responsive to performing supervised learning over at least a portion of the labeled training dataset;” (c) receiving data of values, i.e., “receiving a plurality of attribute values for the subject entity requiring a decision relative to an estimate of the performance variable based on the attribute values of the subject entity;” and (d) using the values in the decision engine to determine a score for the purpose of an objective determination of the factors contributing to the score, i.e., applying the trained decision engine to the plurality of attribute values to determine a decision score as a function obtained as a set of linearly decomposed constituent components corresponding to the attribute values of the subject entity, thereby effectuating an objective determination of which attributes contribute to what portions of the decision score in a computationally efficient manner. Appeal Br. 21 (Claims App.). We consider claim 1 as a whole3 giving it the broadest reasonable construction4 as one of ordinary skill in the art would have interpreted it in light of the Specification5 at the time of filing. 3 “In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.” Diehr, 450 U.S. at 188. 4 Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation . . . .”) (emphasis added). 5 “First, it is always important to look at the actual language of the claims. . . . Second, in considering the roles played by individual limitations, Appeal 2021-003202 Application 15/953,029 11 Outside of stating that the method is “computer-implemented,” the limitations do not recite any specific structure that performs the steps. The Specification provides that the method “may be implemented using different combinations of software, firmware, and/or hardware” (Spec. ¶ 28), i.e., any conventional and generic computer that can be programmed to perform the functions. Obtaining data records and receiving a value comprise an abstract idea and extra-solution activity. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is undisputedly well- known. Indeed, humans have always performed these functions.”); Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (collecting information is an abstract idea); In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity); ChargePoint, Inc. v. SemaCONNECT, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019) (identifying communicating over a network as an abstract idea); MPEP § 2106.05(g). The limitations of “requiring a decision relative to an estimate” and generating and applying the decision engine are recited functionally without details on how, technologically or by what algorithm(s), they are performed. “Requiring a decision relative to an estimate” is an evaluation of data, which it is important to read the claims ‘in light of the specification.’” Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed. Cir. 2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, 822 F.3d at 1335, among others). Appeal 2021-003202 Application 15/953,029 12 is a mental process. See Electric Power, 830 F.3d at 1354 (citing cases) (“we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes”). As to the generating and applying of a trained decision engine, the Specification provides that this is performed by the predictive modelling approaches of a Random Forest (“RF”) ensemble of decision trees (see Spec. ¶¶ 9, 39-41) or by a Gradient Boosted Tree (“GBT”) ensemble of regression techniques (see id. ¶¶ 9, 55-58). These are predictive models for evaluating data. See Spec. ¶ 9; see also https://en.wikipedia.org/wiki/ Decision_tree_learning (last accessed March 2, 2022). The use of RF or GBT techniques, then, is a mathematical relationship or formula which is abstract itself. That the purpose of applying the engine is to “effect an objective determination” does not alter the analysis as there are no details on how this would be performed. When considered collectively and under the broadest reasonable interpretation, the limitations of claim 1 recite a mental process and the abstract concept of using mathematical algorithms to perform predictive analytics for the purpose of decision-making regarding credit worthiness.6 This is an abstract idea of a “[c]ertain method[] of organizing human activity-fundamental economic principles or practices (including hedging, insurance, mitigating risk)” and “[m]ental processes-concepts performed in 6 We note that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. at 1241. Appeal 2021-003202 Application 15/953,029 13 the human mind (including an observation, evaluation, judgment, opinion).” Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II). Our reviewing court has held similar concepts to be abstract. For example, the Federal Circuit has held abstract the concepts of “verifying the validity of a credit card transaction over the Internet” and detecting fraud in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370, 1374 (Fed. Cir. 2011), “detecting fraud and/or misuse in a computer environment based on analyzing data” according to “one of several rules” in FairWarning IP, LLC c. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016), “a process that employs mathematical algorithms to manipulate existing information to generate additional information” in Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014), “collecting and analyzing information for financial transaction fraud or error detection” in Bozeman Financial LLC v. Federal Reserve Bank of Atlanta, 955 F.3d 971, 978, 981 (Fed. Cir. 2020); and using a third party to mitigate settlement risk in Alice, 134 S. Ct. at 2356. As such, we disagree with the Appellant’s contention that the Examiner’s characterization is in error. See Appeal Br. 14; Reply Br. 3. We further disagree with the Appellant’s contention that the claim cannot be a mental process. See Appeal Br. 14-16; Reply Br. 3-4. The Appellant argues that “the term ‘a trained decision engine’ is a module that may be embodied in hardware and/or in software (including firmware, resident software, micro-code, etc.) that runs on a processor” and thus, “no mental process or a manual process with pen and paper can practically ‘generate’ a module that is consistent with the use of this term in the context of the present patent application,” i.e., as a “predictive model.” Appeal Appeal 2021-003202 Application 15/953,029 14 Br. 14; see also Reply Br. 3-4. We note that “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). Here, there are no technical details claimed as to how the predictive model is generated. “Merely claiming ‘those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance,’ does not make a claim eligible at step one.” Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1328 (Fed. Cir. 2020) (citation omitted); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167-68 (Fed. Cir. 2018) (to avoid ineligibility, a claim must have the specificity to transform it from one claiming only a result to one that claims a way of achieving the result); Elec. Power, 830 F.3d at 1356 (“the essentially result-focused, functional character of the claim language has been a frequent feature of claims held ineligible under § 101”). Even if the Specification described technical details of this process, they are not recited in claim 1. See Ericsson, 955 F.3d at 1325 (“[T]he specification may be ‘helpful in illuminating what a claim is directed to . . . [but] the specification must always yield to the claim language’ when identifying the ‘true focus of a claim.’”) (citation omitted); Accenture Glob. Servs. GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (“[T]he complexity of the implementing software or the level of detail in the specification does not transform a claim reciting only an abstract concept into a patent-eligible system or method.”). Although dependent claims 3, 4, 9, 10, 15, and 16 recite the use of RF ensembles of trees and Appeal 2021-003202 Application 15/953,029 15 GBT ensembles of regression analysis, there are no further technical details claimed, indicating these methods of predictive modeling are known. At best, the hardware and/or software, as discussed more fully below, merely limits the invention to a particular environment. The Appellant also argues that the claim cannot recite a mental process because “to have an individual perform, mentally or manually, a determination of which attribute values contribute to a decision score of a subject entity at all, and to what extent, is necessarily a subjective exercise fraught with potential implicit bias” and “to obtain the benefits of the claimed invention [of objectivity], it must necessarily be performed entirely on a computer as a practical matter.” Appeal Br. 15 (citing SiRF Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010)); see also Reply Br. 4. First, we note that SiRF was decided prior to the Mayo and Alice decisions and thus did not apply the Mayo/Alice framework. Second, the Appellant’s argument is unsupported by evidence or reasoning. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). We disagree that an individual cannot perform a determination without bias; rather, many individuals such as judges, statisticians, mathematicians, and auditors are required to do so. Moreover, the computer is programmed by an individual to perform certain actions; using the Appellant’s logic, this programming would also not be objective because it would be performed having the individual’s implicit biases. Having concluded that claim 1 recites a judicial exception under the Guidance, Step 2A, Prong One, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. To do so, we look to whether the claim “appl[ies], rel[ies] on, Appeal 2021-003202 Application 15/953,029 16 or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim[ is] more than a drafting effort designed to monopolize the judicial exception,” i.e., “integrates a judicial exception into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP § 2106.04(d). We agree with and adopt the Examiner’s findings and conclusion that the additional limitations of claim 1 do not integrate the abstract idea into a practical application, as the term is used in USPTO guidance. See Non-Final Act. 8-10. We add the following for emphasis. Here, the only additional elements recited in the independent claims beyond the abstract idea are the “computer” that purportedly implements the method and the “trained decision engine” - elements that, as the Examiner finds, “are specified at a high level of generality” (Final Act. 3) and are described in the Specification as known, generic computer elements. See supra, e.g., Spec. ¶¶ 28-32, Figs. 1, 2 (describing a generic computer system comprising known elements, modules, and databases). As is clear from the Specification, there is no indication that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any asserted inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible.”). We also find no indication in the Specification that the claimed invention as recited in claim 1 effects a transformation or reduction of a Appeal 2021-003202 Application 15/953,029 17 particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in technology and/or a technical field to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in USPTO Guidance. The Appellant argues: The claimed invention, when taken as a whole, is directed to a concrete and tangible implementation of a method and apparatus for facilitating objective determination of a credit decision score for a subject entity, wherein the constituent components of the credit decision score are determined as a set of linearly decomposed components corresponding to the attributes of the subject entity. Appeal Br. 17. However, the Appellant does not explain how this “concrete and tangible implementation” integrates the judicial exception into a practical application per USPTO guidance. “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility.” MPEP § 2106.04(d)(I) (citing Alice, 573 U.S. at 224). The Appellant further argues “the credit decision score is determined by applying a trained decision engine, which is necessary to provide objectivity in the credit decision scoring process. It is clear, therefore, that the claims do not preempt all manners of determining a credit decision score for subject entities.” Appeal Br. 17; see also Reply Br. 5-9 (arguing that limitations of the claim “necessarily impose[] a meaningful limit on the alleged abstract idea of credit scoring because the claim does not cover all Appeal 2021-003202 Application 15/953,029 18 manners of determining a credit score for a subject entity” and do not monopolize the abstract idea). Although the Supreme Court has described “the concern that drives this exclusionary principle[, i.e., the exclusion of abstract ideas from patent eligible subject matter,] as one of pre-emption” (see Alice, 573 U.S. at 216), characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id.; see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (“A narrow claim directed to an abstract idea, however, is not necessarily patent-eligible ....”). That the claim does not preempt “all manners of determining a credit decision score for subject entities” does not make claim 1 any less abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.Cir.2014); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015). The Appellant disagrees that “unless there is ‘an improvement in computers as tools’ or ‘a specific improvement to computer functionality,’ there is no integration of a judicial exception into a practical application,” arguing that “the courts have also found that improvements in technology other than computer functionality may demonstrate patent eligibility.” Appel Br. 17 (citing Guidance, 84 Fed. Reg. at 54-55). The Appellant’s Appeal 2021-003202 Application 15/953,029 19 general citation to the Guidance without further explanation is not persuasive of error. USPTO guidance provides exemplary considerations of what would be indicative of an additional element integrating the abstract idea into a practical application. See Guidance, 84 Fed. Reg. at 55; MPEP § 2106.04(d)(I). These include: (1) “[a]n improvement in the functioning of a computer, or an improvement to other technology or technical field”; (2) “[a]pplying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition”; (3) “[i]mplementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim”; (4) “[e]ffecting a transformation or reduction of a particular article to a different state or thing”; and (5) “[a]pplying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” MPEP § 2106.04(d)(I). Consideration (2) does not apply here. As discussed above, the method of claim 1 is computer-implemented by a general purpose computer, and thus consideration (3) does not apply. MPEP § 2106.05(b)(I) (“It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine.”). As also discussed above, there is no indication that the claimed invention as recited in claim 1 effects a transformation or reduction of a particular article to a different state, so consideration (4) does not apply. See id. § 2106.05(c). Appeal 2021-003202 Application 15/953,029 20 The Appellant argues that the claim satisfies consideration (1) in that “the claimed invention provides specific improvements over the existing technology of credit scoring by facilitating objective determination of scores as well as their constituent components by conveniently identifying the attributes of subject entities that contribute the most,” “by decomposing a decision score into respective contributions from different attributes in the manner as set forth in the claimed invention, [so that] various compliant adverse actions may be effectuated with respect to a subject entity in a computationally efficient manner,” and by being “operative to determine objectively and efficiently which attributes contribute how much of a deviation of the decision score from a subject entity’s target score, e.g., with fewer computational resources such as memory/processing requirements, leading to faster convergence times, robustness, scalability, quicker/reliable compliance assurance, etc.” Appeal Br. 17-18; Reply Br. 5. First, we note that credit scoring is not a technological field, but a financial field for risk management. Any improvements toward facilitating objective determination of score in the field of credit scoring, decomposing a decision score into respective contributions, and objectively and efficiently determining the contributions of each attribute are improvements in the abstract idea itself, and not to any technology or technical field. To the extent the Appellant argues that there are technical improvements in computational efficiency and in using “fewer computational resources such as memory/processing requirements, leading to faster convergence times, robustness, scalability, quicker/reliable compliance assurance, etc.” (Appeal Br. 17-18; see also Reply Br. 5, 8), we are not persuaded of error by the argument. The Specification attributes the Appeal 2021-003202 Application 15/953,029 21 “fewer computational resources such as memory/processing requirements, faster convergence times, robustness, scalability, quicker/reliable compliance assurance, etc.” to the method in general. Spec. ¶ 68. There is no explanation how the claimed method achieves these technical benefits. At best, the benefits may be achieved by the use of the computer, engine, and automation of the determinations. Such automation does not improve computers or solve a technical problem. See Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir. 2019) (“But the need to perform tasks automatically is not a unique technical problem.”); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (“The only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. . . . This is not an improvement in the functioning of the computer itself.”); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“[A]utomation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012) (“Using a computer to accelerate an ineligible mental process does not make that process patent-eligible.”). Notably, the Specification does not attribute the asserted reduction in the use of computational resources to any improvements in computers, processors, memory, data structures, or any other technology, but at best, to the use of existing, known predictive modeling. See Spec. ¶ 68. Nor do we have any evidence of actual reductions in computational resources such as memory/processing requirements and faster convergence times beyond the Appellant’s generalized assertions. Appeal 2021-003202 Application 15/953,029 22 As to consideration (5), claim 1 merely uses the computer to link the credit scoring to a particular technological environment. See Alice, 573 U.S. at 223 (holding that attempting to limit the use of an abstract idea to a particular technological environment does not make a claim patent-eligible) (quoting Bilski, 561 U.S. at 610-11); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court and [the Federal Circuit] have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.”); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1268 (Fed. Cir. 2018) (“We have consistently held, however, that claims are not saved from abstraction merely because they recite components more specific than a generic computer.” (citing cases)). The claim’s focus is “not a physical-realm improvement but an improvement in a wholly abstract idea,” that is not eligible for patenting. SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018); see also Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 893 (Fed. Cir. 2019) (“Where a claim’s ‘essential advance’ is abstract, a novel method of performing that advance ‘does not avoid the problem of abstractness.’” (quoting Affinity Labs, 838 F.3d at 1263)). The benefits here “flow from performing an abstract idea in conjunction with” well-known computer structure. BSG Tech, 899 F.3d at 1289. The Appellant does not, and cannot, claim to have invented the use of the computer or the decision engine. The “focus” of the claim is not “on the specific asserted improvement in computer capabilities” (Enfish, 822 F.3d at 1336), but rather on using the computer as a tool to implement the abstract Appeal 2021-003202 Application 15/953,029 23 idea in the particular field of credit scoring. See MPEP § 2106.04(d)(I) (identifying limitation that do not integrate the judicial exception into an practical application). We thus agree with the Examiner that the additional elements of claim 1 do not integrate the judicial exception into a practical application, as the term is used in USPTO guidance, because they are “no more than mere instructions to apply the exception using a generic computer component.” Final Act. 3. Thus, we are not persuaded of error in the Examiner’s determination that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework Under the second step in the Mayo/Alice framework and USTPO guidance Step 2B, we “[e]valuat[e] additional elements to determine whether they amount to an inventive concept [which] requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” MPEP § 2106.05(I). Here, the Examiner finds that, considering the claim limitations individually as an ordered combination, the additional elements amount to no more than mere instructions to apply the exception using generic computer components and do not amount to significantly more than the recited abstract idea. Final Act. 4. We agree. The Appellant argues that “the analysis provided above with respect to Prong Two - Revised Step 2A of 2019 PEG is also applicable here, and Appellant therefore submits that the claims amount to ‘more than mere instructions to apply an exception using a generic computer component.’” Appeal 2021-003202 Application 15/953,029 24 Appeal Br. 18. For the reasons discussed above, we are not persuaded of error by the Appellant’s arguments. The Appellant also argues that the “objective determination of a decision score and its constituent components is more than insignificant extra-solution activity, thereby forming an inventive concept for purposes of Alice Step 2B analysis.” Appeal Br. 19; see also Reply Br. 8-9. As discussed above, under Step 2B we look to whether the additional elements beyond the abstract idea, individually or in combination, provide an inventive concept. Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(I). Alice is clear, as described above, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice, 573 U.S. at 217; see also Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself”). In other words, the inventive concept under step two of the Mayo/Alice framework cannot be the abstract idea itself: “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Order, On Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring) (Berkheimer II); see also BSG Tech, 899 F.3d Appeal 2021-003202 Application 15/953,029 25 at 1290 (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Here, the Examiner properly considers the additional elements outside the abstract idea and determines they do not transform the nature of the claim into a patent-eligible application. See Final Act. 3-4. As discussed above, the claim simply recites the functional results to be achieved. The limitation to which the Appellant refers, i.e., limitation (d) of applying the engine to determine a decision score to effectuate an objective determination, is, as also discussed above, a mental process - an abstract ideas itself, and part of the abstract idea as a whole; it is not an additional element to be considered when determining whether claim 1 includes additional elements or a combination of elements that is sufficient to amount to significantly more than the judicial exception. And, as discussed above, the only claim elements beyond the abstract idea are the computer and engine, recited generally, that the Specification indisputably shows were conventional at the time of the filing. See supra. Thus, we are not persuaded of error in the Examiner’s determination that the additional elements of claim 1, considered individually and as an ordered combination, do amount to significantly more than the abstract idea itself. We sustain the Examiner’s rejection under 35 U.S.C. § 101 of independent claim 1 and thus also of claims 2-18. CONCLUSION The Examiner’s decision to reject claims 1-18 is sustained. Appeal 2021-003202 Application 15/953,029 26 In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-18 101 Eligibility 1-18 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2019). AFFIRMED